Deciding Foreign Case Law; Certifying Questions; and Patent Assignments

Patent

by Dennis Crouch

The Wi-LAN decision focuses on a litigation discovery dispute. In 2009, Wi-LAN had its attorneys at Kilpatrick Townsend (then Townsend) analyze the scope of LG's infringement.  After LG refused to pay, Wi-LAN forwarded the results of the Townsend inquiry (the Townsend Letter) to LG.  Once litigation started, LG requested that Kilpatrick disclose documents and testimony relating to the Townsend Letter.  Kilpatrick refused based upon its argument that the requested information was protected by attorney-client privilege.  On the other side, LG argued that any privilege was waived by Wi-LAN's voluntary disclosure of the results.  The district court sided with LG and held Kilpatrick in contempt-of-court.

On appeal, the Federal Circuit has vacated the decision –  holding that the district court applied the wrong standard in determining the scope of waiver. Hefe, the court focused on Ninth-Circuit law to determine the scope of privilege waiver and held that –  if faced with this case – would require a fairness balancing before requiring disclosure of otherwise privileged information.

The most inwardly interesting aspect of the decision stems from the short opinion dubiante by Judge Reyna.  A dubiante opinion is typically seen as the weakest form of concurrence.  Here, Judge Reyna writes:

The majority embarks on a winding course as it explores Ninth and other regional circuit case law, and evidentiary rules. At the start of its journey, the majority recognizes, “The parties do agree that the Ninth Circuit has not spoken squarely on this issue, i.e., whether fair-ness balancing is either required or proscribed in this case.”

Still, the majority discerns a trend in the law and on that basis takes a guess that the Ninth Circuit, if its hand were at the helm, would hold that there must be a fair-ness balancing in the context of express extrajudicial waivers.

I examine the trend and find in it no gates that lead to secure blue water. Indeed, I find that even a route that lies opposite the route charted by the majority is as good a route as any.

Thus, while instinct tells me the majority could be correct, I am concerned that our heading is not based on an accurate bearing. As I cannot prove or disprove our result, I go along with the majority—but with doubt.

Certifying Questions of Non-Federal-Circuit-Law: The decision here could well be contrasted with the court's recent opinion in Preston v. Marathon Oil (Fed. Cir. 2012).  That case involved a patent ownership dispute between Mr. Preston and his former employer Marathon.  At oral arguments, the court discovered a disputed question of Wyoming law as to whether particular additional consideration is necessary to support an IP assignment agreement signed by an at will employee.  The Wyoming supreme court took-up that case and held that the continuation of the at-will employment is sufficient consideration.   Preston v. Marathon Oil Co., 277 P.3d 81, 82 (Wyo. 2012).  Based on the state court decision, the Federal Circuit then quite easily held that the assignment agreement was valid and that the disputed patents were owned by Marathon.

Perhaps Judge Reyna would have been more satisfied with certifying the Wi-LAN case to the Ninth Circuit for determination of the privilege question in that case.  

= = = = =

Employment agreements are generally covered by local law –  thus, this result may vary state-to-state. One catch is that the court has federalized some bits of the law of IP assignments. Probably most importantly, the Federal Circuit has held that a prospective assignment agreement works to automatically transfer ownership rights at the moment of invention –  so long as the previously-signed agreement includes the correct magic words.

Made or Conceived: As an aside –  but critical to Preston's case – the IP assignment agreement included an assignment of any “invention … made or conceived” while at Marathon.  Preston argued that he had the idea for the invention before starting work.  The Federal Circuit found Preston's argument lacking, even if factually correct since the invention was made (i.e., reduced to practice) after Preston joined Marathon.  The Court did not indicate whether this aspect of its decision was decided under state law or federal law.  

Loughlin v. Ling

Patent

By Jason Rantanen

Loughlin v. Ling (Fed. Cir. 2012) Download 11-1432
Panel: Lourie (author), Rader, Moore

This opinion concerns the relationship between 35 U.S.C. § 135(b)(2), which limits the circumstances under which an interference may be provoked, and 35 U.S.C. § 120, which provides the benefit of an earlier filing date based on a prior application.  Section 135(b)(2) states:

A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an application published under section 122(b) of this title may be made in an application filed after the application is published only if the claim is made before 1 year after the date on which the application is published.

(emphasis added).  Ling et al. filed their original application on January 16, 2004.  Four months later, Loughlin et al. filed their application, which was published on November 18, 2004, and which subsequently issued as a patent.  On February 5, 2007, Ling filed a second application that was granted priority to the original application under section 120.  Seeking to provoke an interference, on February 21, 2007, Ling copied into this second application claims from Loughlin's pending application. 

Loughlin contended that Ling's was barred from provoking an interference by § 135(b)(2), as the claims were made more than a year after Loughlin's application was published and Ling's second application was filed in 2007, well after Loughlin's application was published (in 2004).

The Federal Circuit disagreed, affirming the Board of Patent Appeals and Interference's ruling that the priority benefit of § 120 applies to § 135(b)(2) – in essence, treating Ling's second application as if it had been filed as of the filing date of the first, thus taking it outside the scope of the "application filed after" language.  "We agree with Ling that the Board correctly interpreted § 135(b)(2) in view of the plain language of that statute and the benefit provision of § 120. The first sentence of § 120 permits an application to claim the benefit of an earlier filing date, such that the application is treated as having been effectively filed on the earlier date."  Slip Op. at 8.  In reaching this conclusion, the court noted the broad applicability of section 120, such as in the context of § 102(b), (d), and (e), and that the Board has consistently interpreted § 135(b)(2) as including the priority benefit of § 120.

CLS Bank v. Alice: The “Nothing More Than” Limitation on Abstract Ideas

Patent, , ,

By Jason Rantanen

CLS Bank International v. Alice Corporation Pty. Ltd. (Fed. Cir. 2012) Download 11-1301
Panel: Linn (author), O'Malley, Prost (dissenting)

Despite two recent opinions by the Supreme Court, the issue of patent eligible subject matter continues to sharply divide the Federal Circuit.  CLS Bank v. Alice Corporation illustrates this point neatly, even going a step further.   Unlike other recent opinions involving questions of patent eligible subject matter that have approached the issue in a relatively narrow, case-specific manner, here the majority implements a sweeping rule with significant implications for future cases – a rule that the dissenting judge criticizes as being irreconcilable with Supreme Court's precedent.

Background: Alice sued CLS for infringement of four patents covering, in the majority's words, "a computerized trading platform for exchanging obligations in which a trusted third party settles obligations between a first and second party so as to eliminate 'settlement risk'.  Settlement risk is the risk that only one party's obligation will be paid, leaving the other party without its principal."  Slip Op. at 2.  The patents included method, system, and computer program product claims. Claim 1 of Patent No. 7,149,720 is representative of the system claims:

1. A data processing system to enable the exchange of an obligation between parties, the system comprising:
a data storage unit having stored therein information about a shadow credit record and shadow debit record for a party, independent from a credit record and debit record maintained by an exchange institution; and

a computer, coupled to said data storage unit, that is configured to (a) receive a transaction; (b) electronically adjust said shadow credit record and/or said shadow debit record in order to effect an exchange obligation arising from said transaction, allowing only those transactions that do not result in a value of said shadow debit record being less than a value of said shadow credit record; and (c) generate an instruction to said exchange institution at the end of a period of time to adjust said credit record and/or said debit record in accordance with the adjustment of said shadow credit record and/or said shadow debit record, wherein said instruction being an irrevocable, time invariant obligation placed on said exchange institution.

The district court granted summary judgment of invalidity based on a failure to claim patent eligible subject matter.  Alice appealed.

The majority's "nothing more than" limitation: In reversing the district court, the majority focused on the "abstract ideas" exception to patent eligible subject matter.  Examing the concept of "abstract ideas," the majority concluded that despite substantial precedent and commentary, its meaning remains unclear and its boundary elusive.  There is, of course, some guidance in the precedent, notably the machine or transformation test and concerns about preempting an entire field of innovation.  There are also computer-specific opinions, which the majority distilled down into the rule that "a claim that is drawn to a specific way of doing something with a computer is likely to be patent eligible whereas a claim to nothing more than the idea of doing that thing on a computer may not."  Slip Op. at 18 (emphasis in original). But even this rule allows for "great uncertainty" as to the meaning of "abstract ideas."

Against this backdrop, the majority did not attempt to define the concept of "abstract ideas."  Instead, it implemented a new rule that minimizes the need to make such a determination and strongly favors a conclusion of patentable subject matter when claims involve anything that might be characterized as an abstract idea.  The majority's rule:

"this court holds that when—after taking all of the claim recitations into consideration—it is not manifestly evident that a claim is directed to a patent ineligible abstract idea, that claim must not be deemed for that reason to be inadequate under § 101…Unless the single most reasonable understanding is that a claim is directed to nothing more than a fundamental truth or disembodied concept, with no limitations in the claim attaching that idea to a specific application, it is inappropriate to hold that the claim is directed to a patent ineligible “abstract idea” under 35 U.S.C. § 101."

Slip Op. at 20-21 (emphasis added).  Applying this rule, the majority concluded that Alice's claims were directed to patent eligible subject matter.  In reaching this conclusion, it emphasized the need to look at the claim as a whole rather than to generalize the invention as the district court did.  Applying this approach, the majority concluded that the computer limitations "play a significant part in the performance of the invention" and that the claims are "limited to a very specific application of the concept of using an intermediary to help consummate exchanges between parties." Id. at 26. 

The majority also emphasized a theme previously discussed on PatentlyO: that district courts have the discretion to determine the order in which to assess questions of validity, and may execise that discretion in the interests of judicial efficiency: "Although § 101 has been characterized as a “threshold test,” Bilski II, 130 S. Ct. at 3225, and certainly can be addressed before other matters touching the validity of patents, it need not always be addressed first, particularly when other sections might be discerned by the trial judge as having the promise to resolve a dispute more expeditiously or with more clarity and predictability."  Slip Op. at 13 (emphasis added).

Judge Prost's Dissent: Writing in dissent, Judge Prost sharply criticized the majority for "responding to a unanimous Supreme Court decision against patentability with even a stricter subject matter standard."  Dissent at 8.    "The majority resists the Supreme Court’s unanimous directive to apply the patentable subject matter test with more vigor. Worse yet, it creates an entirely new framework that in effect allows courts to avoid evaluating patent eligibility under § 101 whenever they so desire."  Id. at 1.  Judge Prost was equally critical of the majority's departure from the Supreme Court's case-specific approach to questions of patent eligible subject matter.  "The majority has failed to follow the Supreme Court’s instructions—not just in its holding, but more importantly in its approach."  Id. at 3.

Central to Judge Prost's dissent is the view that the Supreme Court in Prometheus required that to be patent eligible the subject matter must contain an "inventive concept."  "Now there is no doubt that to be patent eligible under § 101, the claims must include an “inventive concept.”  Dissent at 3. Finding nothing inventive in the claims – they consist of the abstract and ancient idea together with its implementation via a computer – the dissent concludes that they cannot constitute patent eligible subject matter.

The Heart of the Dispute: One interpretation of the divide between majority and dissent is that it flows from fundamentally different approaches to the question of what the "invention" is for purposes of § 101.  The majority sees the "invention" as rigidly defined by the claims: "ignoring claim limitations in order to abstract a process down to a fundamental truth is legally impermissible," and accuses the dissent of doing just that.  Slip Op. at 23.  In contrast, the dissent, while recognizing the importance of the claims, strips them of jargon in order to ask "So where is the invention"?  Dissent at 5.  The majority's approach resembles the standard patent law approach to dealing with the concept of the invention; the dissent's is much more similar to how the Supreme Court analyzes questions of patentable subject matter. 

In any event, given the fundamental disagreement between the majority and dissent, this will be a case to keep a close eye on.

Correction to original post: Judge Lourie was joined by Judge O'Malley, not Judge Moore.

Sciele v. Lupin: The Presumption of Validity Does Not Change

Patent,

By Jason Rantanen

Sciele Pharma Inc. v. Andrx Corporation (Fed. Cir. 2012) Download 12-1228
Panel: Moore (author), Lourie, Prost

Lupin sought permission to market a generic version of Fortamet, an extended-release tablet of metaformin hydrochloride.  In response, Shionogi filed a lawsuit asserting infringement of Patent No. 6,866,866, thus triggering a 30-month stay of FDA approval.  The stay expired while the litigation was still ongoing and Lupin attempted an at risk launch of its generic product.  Shionogi obtained a preliminary injunction to prevent Lupin from selling its product that Lupin appealed.

This opinion is noteworthy largely for its discussion of the presumption of validity.  Lupin argued that the presumption of validity should not apply because of errors committed by the patent office during prosecution: the patent office erroneously issued the patent with claims that had been both rejected by the examiner and cancelled by the applicant.  Shionogi argued that there should be a heightened presumption of validity because the prior art references relied on by Lupin were before the PTO during prosecution. 

The Federal Circuit rejected both arguments, although it acknowledged that the specific circumstances could carry some weight in the overall determination.  "Whether a reference was previously considered by the PTO, the burden of proof is the same: clear and convincing evidence of invalidity…The burden does not suddenly change to some-thing higher–“extremely clear and convincing evidence” or “crystal clear and convincing evidence”–simply because the prior art references were considered by the PTO."  Slip Op. at 10-11.  However, the fact that references were previously before the PTO could impact the weight the court or jury assigns to the evidence: "For example, it could be reasonable to give more weight to new arguments or references that were not explicitly considered by the PTO when determining whether a defendant met its burden of providing clear and convincing evidence of invalidity."  Id.

Likewise, while the court rejected the argument that the presumption of validity did not apply because of the PTO's errors during prosecution, it allowed those errors to be considered: "We can take it all into account, including both the fact that the Cheng and Timmins references were before the Patent Office and the bizarre circumstances surrounding the issuance of the claims in this patent."  Id. at 12.

Against this backdrop, the CAFC concluded that the district court's obviousness analysis was flawed because it overstated the fact that the references were not before the PTO in KSR and incorrectly rejected Lupin's substantive arguments on disclosure and motivation to combine.

Although the standard for determining whether the patentholder has demonstrated a likelihood of success on the merits is a significant issue in some preliminary injunction appeals, this does not appear to be one where the outcome would have turned out differently if the CAFC had applied a standard other than whether the applicant raised a substantial question as to validity.'  The Federal Circuit judges were clearly persuaded that there was a strong obviousness challenge to the patent. 

Three new USPTO Satellite Offices: Denver, Dallas, and San Jose

Patent

Patent2011074On Monday, the USPTO is expected to announce the location of its three new satellite patent offices: Denver, Colorado; Dallas, Texas; and San Jose, California.  A fourth satellite office sited in Detroit, Michigan was particularly identified in the 2011 America Invents Act and is slotted to host a grand opening event next week (July 12).  The USPTO’s primary office will remain in Alexandria, Virginia –  just outside of Washington DC.  The satellite offices are expected to each house around 100 patent examiners and a handful of administrative patent judges.  These offices will also serve as check-in centers for examiners taking part in the PTO’s popular telework (work-from-home) program.  In addition, the satellite offices are expected to include high-quality teleconferencing equipment that patent applicants can use to conduct examiner interviews and argue appeals even when decision makers remain in DC.  Expect for the three new satellite offices to open in early 2013.

Although not tremendous, the new satellite office locations will serve as a boon for local patent attorneys and also local high-tech entrepreneurs.  A major open question is whether the USPTO will have the ability be able to hire and retain high-quality electrical engineers to staff its silicon valley patent office.

The USPTO continues to hire new patent examiners, administrative patent judges, and others. In particular, the Office currently has a “critical need for electrical engineers” but is also hiring mechanical engineers and chemistry gurus.

 

Supreme Court Grants Cert in Already v. Nike

Patent

By Jason Rantanen

This morning the Supreme Court granted certiorari in Already, LLC dba Yums v. Nike, Inc., No. 11-982, an appeal carrying the potential for profound implications for patent law.  The question presented asks:

Whether a federal district court is divested of Article III jurisdiction over a party’s challenge to the validity of a federally registered trademark if the registrant promises not to assert its mark against the party’s then-existing commercial activities.

The Petition focused on a split between the Second and Ninth Circuit, but similar disagreements have simmered in the Federal Circuit.  Under controlling Federal Circuit precedent, it has long been the law that a patent holder can divest a federal court of Article III jurisdiction over the defendant's counterclaim for a declaratory judgment of patent invalidity by promising not to sue.  See Super Sack Mfg. Corp. v. Chase Packaging Corp., 57 F.3d 1054, 1059-60 (Fed. Cir. 1995).  A subsequent dissent by Judge Dyk, however, urged the abandonment of the Super Sack rule.  See Benitec Australia, Ltd. v. Nucleonics, Inc., 497 F.3d 1340, 1350-55 (Fed. Cir. 2007) (Dyk, J., dissenting). 

Should the Court agree with Petitioners, it thus would very likely spell the end of the so-called Super Sack covenant, making it harder for patent holders to withdraw their patents once placed into litigation. 

Notes:

Wrigley v. Cadbury: Pushing Back Against Impax

Patent,

By Jason Rantanen

WM. Wrigley Jr. Co. v. Cadbury Adams USA LLC (Fed. Cir. 2012) Download 11-1140-1150
Panel: Bryson (author), Newman (dissenting-in-part), Fogel

Chewing gum is a big business, with billions of dollars of sales each year.  Wrigley and Cadbury are the two dominant players and compete closely in the "cooling sensation" gum market.  This lawsuit involved patent assertions by each company: Cadbury contended that Wrigley infringed its Patent No. 5,009,893, which claims chewing gum containing a combination of menthol and a coolant known as WS-3, while Wrigley contended that Cadbury infringed its Patent No. 6,627,233, which claims chewing gum containing a combination of menthol and a coolant known as WS-23.

The district court proceedings were essentially a wash: Cadbury obtained summary judgment of anticipation and obviousness of the '233 patent, while Wrigley obtained summmary judgment of noninfringement of the '893 patent.  Both parties appealed. 

Anticipation: Anticipation of the '893 was based on a prior art patent referred to as "Shahidi."  Shahidi discloses a variety of oral compositions such as toothpaste and chewing gum, containing several categories of components, including those that are "essential," "optional," and "preferred."  Included in the preferred nonessential categories were WS-3 and WS-23, with menthol being listed as one of 23 flavoring agents that can be used in the claimed composition.

Relying on Impax Laboratories v. Aventis Pharmaceuticals, 545 F.3d 1312 (Fed. Cir. 2008), Wrigley argued that Shahidi could not anticipate because it would require a PHOSITA to pick items from two lists of components in order to assemble the invention, and thus did not disclose all of the limitations of the claim arranged or combined in the same way as in the claim.  Rejecting the extension of Impax to this case, the CAFC concluded that the disclosure in Shahidi was sufficient.  The ultimate question instead was "whether the number of categories and components in Shahidi was so large that the combination of WS-23 and menthol would not be immediately apparent to one of ordinary skill in the art."  Slip Op. at 8-9. The majority concluded that it was not.

Judge Newman disagreed with the holding of anticipation.  "The purported anticipatory reference does not show this combination, and does not present so short and selective a list of these ingredients as to warrant an inference that their combination was already known."  Slip Op. at 28.  Rather, the contents of Shahidi's lists "can be combined in over a million possible combinations."  Id. at 29. 

  • For those who are interested in looking at the disclosure, a copy of Shahidi is available here: Download US5688491

Obviousness: The CAFC also affirmed the district court's grant of summary judgment of obviousness, a determination that largely turned on whether combining menthol and WS-23 produced an unexpected effect.  The court concluded that there was not: the prior art had already revealed an "enhanced breath-freshening effect" between menthol and WS-3, and pointed to characteristics shared by the WS-3 and WS-23 that suggested that they would likely have similar effects when ingested.  Given these disclosures, the court concluded that effects above and beyond those of the combination of menthol and WS-3 needed to be shown:

to show that the cooling effect of the combination of WS-23 and menthol was unexpected, Wrigley needed to demonstrate that the results were unexpected to a significant degree beyond what was already known about the effect of combining WS-3 and menthol.

Slip Op. at 11 (emphasis added).  The court concluded that such evidence was not present.  The Cadbury study that Wrigley presented, while touting the superior cooling features of Wrigley's products, involved tested products that differed in ways other than just the coolant.  Likewise, the court concluded that no nexus was demonstrated between the commercial success of Wrigley's products containing menthol and WS-23 and the specific combination of menthol and WS-23.

Judge Newman again disagreed, concluding that "[t]he record is rife with" evidence of nexus between the success of Wrigley's chewing gums covered by the claim and the specific combination of menthol and WS-23.  Slip Op. at 24.  Judge Newman further criticized the majority and district court for concluding that Cadbury had established a prima facie case of obviousness, then shifting the burden to the patent holder.  

Infringement by Equivalents: The court unanimously affirmed the district court's ruling of noninfringement, concluding that the claims were narrowly drafted to WS-3 and the interchangeability with WS-23 was forseeable. 

Practice Convention: In the majority opinion, Judge Bryson consistently refers to the patents-in-suit by their abbreviated numbers and the prior art patents, such as Shahidi, by the first inventor's name.  Providing an easy way for the reader to distinguish between the two types of patents in this way adds clarity to his writing.  As far as I am aware this is not currently a generally accepted convention but it seems like a good stylistic practice for attorneys writing briefs. 

Addendum: One commentator pointed out that Judge Bryson is not the only Federal Circuit judge to apply this convention.  Judge Moore also consistently refers to prior art references by name rather than number, although in my small sample of three I noted that a third judge does not. 

Scholarship Roundup: A Guide to the Legislative History of the America Invents Act

Patent

By Jason Rantanen

One of the challenges of working with the Leahy-Smith America Invents Act stems from its legislative history, which is scattered through more than five years of Congressional materials.  To address this challenge, Joe Matal, Judiciary Committee Counsel to Senator Jon Kyl, recently published a comprehensive guide to the legislative history of the AIA in the Federal Circuit Bar Journal.  Matal's compendium provides both a history of the Congressional discussion leading up to the AIA as well as a roadmap to the relevant legislative materials, linking them to particular provisions of the AIA and explaining how to locate each source.  Part I addresses the portions of the AIA that relate to applications before a patent issues, while Part II deals with the portions that apply after a patent is granted.  I highly recommend both to anyone who is analyzing or providing legal advice on the AIA.

A copy of Matal's article is available via SSRN:

Thanks to Professor Colleen Chien for bringing Matal's article to my attention.

Selling Patents

Patent,

InterDigital just sold 1,700 worldwide patents and pending applications to Intel for $375 million in cash –  boosting Intel’s mobile circuitry patent portfolio.  InterDigital was able to transform a substantial number of its fairly non-liquid assets (patents) into cash.  On the purchase, InterDigital’s stock price immediately jumped about 28%.  The price change represents an increase of Company valuation of around $260 million.  One way to look at this price jump is as a reflection in the ongoing difficulty in monetizing patent rights.  Before the deal, investors seemingly valued the patents at only 1/3 of their eventual cash value — largely because it would have been much too speculative to predict that the patents could actually be sold for the price asked.

Patent2011072

The chart above shows InterDigital’s stock price jump immediately following the deal’s announcement. The chart below looks at InterDigital stock prices for the past six months. The sale date and price jump is seen at the far right.  As is obvious, the sale does not make-up for the huge loss in valuation that the company has seen over the past few months. 

Patent2011073

Although every story is unique, it is reflective upon a fact that business leaders know — although patents are valuable and useful assets, it is exceedingly difficult to rely on patents as a company’s primary revenue source. Kodak knows this well.  The company is in bankruptcy and is in the process of selling its final few assets — mainly intellectual property rights that it could not previously fully monetize during.

 

 

Selling Patents

Patent,

InterDigital just sold 1,700 worldwide patents and pending applications to Intel for $375 million in cash –  boosting Intel’s mobile circuitry patent portfolio.  InterDigital was able to transform a substantial number of its fairly non-liquid assets (patents) into cash.  On the purchase, InterDigital’s stock price immediately jumped about 28%.  The price change represents an increase of Company valuation of around $260 million.  One way to look at this price jump is as a reflection in the ongoing difficulty in monetizing patent rights.  Before the deal, investors seemingly valued the patents at only 1/3 of their eventual cash value — largely because it would have been much too speculative to predict that the patents could actually be sold for the price asked.

Patent2011072

The chart above shows InterDigital’s stock price jump immediately following the deal’s announcement. The chart below looks at InterDigital stock prices for the past six months. The sale date and price jump is seen at the far right.  As is obvious, the sale does not make-up for the huge loss in valuation that the company has seen over the past few months. 

Patent2011073

Although every story is unique, it is reflective upon a fact that business leaders know — although patents are valuable and useful assets, it is exceedingly difficult to rely on patents as a company’s primary revenue source. Kodak knows this well.  The company is in bankruptcy and is in the process of selling its final few assets — mainly intellectual property rights that it could not previously fully monetize during.

 

 

Enhanced Damages: The Seagate Objectively Reckless Standard is Now a Question of Law to be Decided by a Judge and Reviewed De Novo on Appeal

Patent, , ,

By Dennis Crouch

Bard Peripheral v. W.L.Gore (Fed. Cir. 2012) (on rehearing)

In an important decision, the Federal Circuit has ruled that the “objective prong” of the test for willful patent infringement is a separate question of law. Moving forward, it will be the trial court’s duty to determine whether the defendant’s actions were objectively reckless. Further, the objective prong will now be subject to de novo review on appeal.

This new system somewhat parallels the judge-determined claim construction that must occur before a jury can determine infringement. As with claim construction, this new judge-focused sub-test will likely drive results in most cases. Because it will be prior-in-time, the judicial decision on objective recklessness will filter-out many willfulness allegations before they reach the jury. And the jury, once it is told that the judge has determined the behavior objectively reckless, is likely to find any infringed patent to be willfully infringed.

Right to Jury: The right to a jury decision on the issue of willfulness already stood on shaky foundation because, by statute, the judge decides the monetary award. The changes in the law brought about here in Bard coupled with those outlined in Seagate suggest that right may now be fully eroded. Further, the decision suggests that it may be proper to treat the entire issue of willfulness as a question of law.

+ + + + +

Treble Damages: The text of the Patent Act appears to provide courts with broad power to treble any damages awarded. The statute reads that “the court may increase the damages up to three times the amount found or assessed.” Although the text offers no limitation on that power, the Federal Circuit has limited the use of enhanced damages to only apply when the adjudged infringement is found to be willful. In Seagate, the Federal Circuit defined a two-prong test for willfulness that requires clear and convincing evidence (1) “that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent” and (2) that the infringer had knowledge (or should have known) of this risk.

Willfulness is a question of fact that has been traditionally decided by a jury. However, as the statute suggests, it is the judge who determines the extent of any enhanced damages (with the limit of three-times the compensatory damage award). Here, the infringer argued that a court (rather than a jury) should first decide the sub-question of whether there existed (at the time of the infringement) an objectively high-likelihood that the infringer’s action’s constituted infringement. The appellate court agreed:

After reviewing the Supreme Court’s precedent in similar contexts, as well as our own, we conclude that simply stating that willfulness is a question of fact over-simplifies the issue. While the ultimate question of willfulness based on an assessment of the second prong of Seagate may be a question of fact, Seagate also requires a threshold determination of objective recklessness. That determination entails an objective assessment of potential defenses based on the risk presented by the patent. Those defenses may include questions of infringement but also can be expected in almost every case to entail questions of validity that are not necessarily dependent on the factual circumstances of the particular party accused of infringement.

In considering the standard applicable to the objective prong of Seagate, it can be appreciated that “the decision to label an issue a ‘question of law,’ a ‘question of fact,’ or a ‘mixed question of law and fact’ is sometimes as much a matter of allocation as it is of analysis.” Miller v. Fenton, 474 U.S. 104, 113-14 (1985). When an “issue falls some-where between a pristine legal standard and a simple historical fact, the fact/law distinction at times has turned on a determination that, as a matter of sound administration of justice, one judicial actor is better positioned than another to decide the issue in question.” Id. at 114; see also Markman v. Westview Instruments, Inc., 517 U.S. 370, 388 (1996) (applying this test to determine that claim construction is best left to the judge). We believe that the court is in the best position for making the determination of reasonableness. This court therefore holds that the objective determination of recklessness, even though predicated on underlying mixed questions of law and fact, is best decided by the judge as a question of law subject to de novo review.

On remand, the district court will be required to specifically consider the question of objective recklessness.

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Clear and Convincing Evidence Standard for a Question of Law?: Seagate requires that objective recklessness be proven with clear and convincing evidence. As the en banc court wrote in 2007 “to establish willful infringement, a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.” Normally, clear-and-convincing evidence is a standard for proving facts. Here in Bard, however, the court now holds that the objective recklessness prong is a question of law. Since the panel here has no power to modify Seagate, the odd joining of these decisions is that the issue of law must still be proven by clear and convincing evidence. In a concurring opinion to the i4i decision, Supreme Court Justice Breyer wrote on this topic – noting that the clear and convincing evidence standard of proof “applies to questions of fact and not to questions of law.” The panel opinion here in Bard either did not recognize this problem or chose to ignore it. The tension here between Seagate and Bard is genuine.

+ + + + +

The majority opinion was written Judge Gajarsa (Senior Judge) and joined by Judge Linn. Judge Newman wrote in dissent and argued that there was no need for a remand because the jury willfulness determination was clearly wrong.

+ + + + +

This case has been brewing for 38 years! Initially it was an inventorship dispute that took 28 years to settle at the PTO, followed by a litigation battle for the past 8 years. The patent covers a prosthetic vascular graft used in bypass surgeries and was originally filed as an application in 1974. U.S. Patent No. 6,436,135.

Predicting En Banc Issues

Patent, , , ,

By Jason Rantanen

Dissenting opinions are generally considered to be good predictors of en banc review.  On one level, this is largely indisputable: most appeals that the Federal Circuit takes en banc involve a divided panel decision, and appellate practitioners are well aware that the chances of getting en banc review of an opinion that contains a dissent are much better than persuading the full court to review a unanimous opinion.  Of course, knowing that dissenting opinions are the more likely candidates for en banc review isn't particularly helpful by itself, since Federal Circuit judges pen more than thirty patent-related dissents each year. 

There's an extension of this theory, however, based on the idea that a high number of dissents on a particular patent law issue is a signal that the court may take that issue en banc in the near future.  There are several reasons why this extended theory is plausible: dissents may indicate that the court is cognizant of the importance of a particular legal issue; they may demonstrate awareness by the court of an intra-circuit split that it needs to resolve; they may also represent a pre-en banc dialogue between the judges.  Dissents are not costless, after all – sometimes they can be as much work or more as writing the majority opinion, and most judges do not write them as a matter of course. 

Empirical observations support this theory, at least for some grants of en banc review.  In the two years prior to the Federal Circuit's grant of en banc review of inequitable conduct in Therasense v. Becton Dickinson, for example, there were four dissents on the issue of inequitable conduct.  On the other hand, in the two years prior to the grant of en banc review in In re Seagate there were no dissenting opinions on the issue of willful infringement.  Thus while there may be value in keeping an eye on areas where dissents are common, it's by no means a perfect predictor.

With that caveat, I read through the patent-related dissents for the past two years to assemble a picture of recent Federal Circuit dissents.  All together, there were 64 of these dissents in panel opinions.  The following chart depicts the authors of those dissents.

Dissents by Judge
The next chart depicts the issues addressed by those dissents that arose with a frequency of greater than 1.  Note that there were four dissents that involved two issues.  In order to prepare the chart below based on dissenting opinions, I included only the first issue, but the second issue would also be relevant.  Those second issues were joint infringement(1), infringement(3), inequitable conduct(2), and doctrine of equivalents(2) (totals dissents addressing this issue in parentheses).

Dissents by Subject Matter

One nuance that is not conveyed by this chart is the degree to which the judges dissent on specific issues.  Two are noteworthy: Judge Dyk wrote four of the dissents on claim construction, while four separate judges (Bryson, Moore, Plager and Mayer) wrote the dissents on the issue of subject matter patentability.  Judge Newman wrote on a variety of issues.

The final chart depicts the issues that the Federal Circuit declined to consider en banc with at least one judge dissenting from that decision.  Note that for several of the issues included in the previous chart (state law malpractice claims, assignment, claim construction, and preliminary injunctions), the court has also declined to consider those issues en banc over the views of at least one judge.

Petitions with Dissents
These statistics hardly tell the whole story, of course.  Both litigation and appeals – let alone en banc review – are rare events, and thus attempting to divine highly predictive information is difficult.  Furthermore, two judges (Judges Newman and Dyk) together wrote almost half of the dissents.  Nevertheless, when combined with other insights, the above data may be helpful.  Claim construction and obviousness are hot topics (although last fall the CAFC declined to take claim construction en banc).  There is also significant disagreement among the judges on subject matter patentability, although they may not be willing address that issue through an en banc court given the Supreme Court's substantial interest in the topic.  In addition, my own sense is that there is more disagreement among the judges on the issue of the standard for preliminary injunctions than is apparent from the statistics alone.  It would not surprise me if the court were to grant en banc review on this issue – although admittedly it declined to do so recently.

What are your views on the next issue that the Federal Circuit reviews en banc?

For more on predicting en banc review generally, see Tracey E. George, The Dynamics and Determinants of the Decision to Grant En Banc Review, 74 Wash. L. Rev. 213 (1999).  For a discussion of Federal Circuit en banc practice, see Christopher A. Cotropia, Determining Uniformity within the Federal Circuit by Measuring Dissent and En Banc Review, 73 Loyola Los Angeles L. Rev. 801 (2010) (available at http://digitalcommons.lmu.edu/cgi/viewcontent.cgi?article=2720&context=llr).

Edit: minor correction to charts. 

Judge Posner: No Damages Despite Infringement

Patent

by Dennis Crouch

Apple v. Motorola (N.D.Ill. 11–cv-8540) (Order by Judge Posner, June 2012)

Compensating for Harm: In most tort cases, the harm is easy to identify (if not prove).  A negligent driving accident results in property damage.  Tortious battery leads to medical bills.  However, the non-rivalrous nature of intellectual property often makes the harm more difficult to ascertain.  No one is directly injured per se when a third party begins to use an inventor's idea without authorization. Rather, the idea is still available and a third party's separate use of the invention does not prevent the inventor from continuing use the invention as well. Competitive injury sometimes comes into play. Of course, in most situations we don't think of competitive injury as an actionable harm, but rather classify it as beneficial competition –  survival of the fittest. And, in most US patent lawsuits, the patented invention does not relate to any ongoing market competition between the parties.  The legal harm does exist, but it comes from the statutory exclusive right that guarantees an exclusive entitlement to the patentee along the potential for injunctive relief and a reasonable royalty.  Patentees expect to collect rents if others use their patented inventions.  Litigation damages are those rents.

Judge Richard Posner is sitting by designation as a trial court judge in a pending infringement lawsuit between Apple and Motorola. (N.D.Ill. 11–cv-8540).  Judge Posner's opinions are always interesting to read and this case is no exception.  In a recent order, Judge Posner canceled the jury trial scheduled for this week and instead opined that the case is moot because there are no damages and therefore, “neither party can establish a right of relief.”  In the order, Judge Posner indicated that a full opinion would be forthcoming, likely within the week. 

The crux of the order is that, even if Apple's asserted patents are valid and infringed, Apple cannot prove any damages stemming from the infringement nor can it prove that the harm of ongoing infringement is sufficient to demand injunctive relief. 

Damages not an Element: For some causes of action, harm is considered an element of the offense that must be proven before liability is found. Ordinary defamation requires harm. Likewise, murder requires a death. However, many other causes of action (including patent infringement) do not require a showing of harm for the substantive case. Rather, the the usual approach in patent cases is to first determine whether infringement has occurred (without regard to the damage caused) and then determine the appropriate damages.  This approach is derived by the patent statute that defines infringement in 35 U.S.C. 271 without regard to damages. A separate provision (discussed below) then suggests a damage calculation method.

Patent Infringement but No Damages?: Section 284 of the Patent Act briefly defines the scope of damages available for infringement. The statute indicates that damages should be “adequate to compensate for the infringement but in no event no less than a reasonable royalty for the use made.”  Many see the statute as offering a minimum statutory damage award of at least a reasonable royalty. In my view, one implication of the statute is that damages will never be properly calculated as zero.  Rather, even a nominal infringement should result in at least a few pennies as the reasonable royalty. 

Proving Damages: It is easy to reconcile my notion that infringement damages are always posigive with Judge Posner's conclusion that no damages exist in this case.  The missing linkage is the procedural reality that it is the patentee's burden to prove damages. A planitiff that cannot prove damages should not expect a court to speculate on the proper award. Rather, without that proof, the proper award is zero (or perhaps a nominal award of $1).  Here, because Apple's damages experts have either been rejected by the court or else have provided unbelievable reports, Apple's award will be zero. 

Toshiba v. Imation: Claim Construction Three Ways

Patent,

By Jason Rantanen

Toshiba Corporation v. Imation Corp. (Fed. Cir. 2012) Download 11-1204
Panel: Moore (author), Schall, and Dyk (concurring-in-part and dissenting-in-part)

Dissents in Federal Circuit opinions dealing with claim construction often reflect disagreements over the correct methodology or execution.  Judge Dyk's dissent in Toshiba goes a step further, proposing a claim construction different from those advanced by either side. 

The technology in Toshiba involves DVDs. Toshiba's patent No. 5,831,966 claims a recording medium containing a "management region" that contains information about the structure of the medium – specifically, "number-of-recording planes identifying information that represents the number of recording planes of the recording medium." The district court construed this as "information whose purpose is to identify the number of recording planes on the recording medium."  Slip Op. at 15 (emphasis in CAFC opinion).  This "purpose" construction mattered because the patent holder accused single-sided DVDs of infringing the '966 patent.  These single-sided DVDs contain information that identifies the number of planes on that side – effectively providing information on the disc as a whole.  Because the purpose of the information on the single-sided DVDs is only to identify the planes on one side of the disc, however, the district court concluded that the accused discs do not infringe.

On appeal the majority disagreed with the district court's construction, agreeing with Toshiba that the limitation should be given its plain and ordinary meaning as recited in the claim itself.  "The language of the claim only requires that the information "represents" the number of recording planes."  Slip op. at 17.  The majority declined to read the embodiments of the specification into the claims.  "Absent disclaimer or lexicography, the plain meaning of the claim controls."  Slip Op. at 19.

Judge Dyk, writing in dissent, saw the issue differently.  In his view, the "number of recording planes" limitation requires the identification of both the number of disc sides and the number of layers per side, a construction neither party advanced.  To support this construction, he took a stronger view of the effect of the specification and the prosecution history than the majority.  In his opinion, "the specification and the prosecution history of the ’966 patent make clear that the central objective of the patent was to identify whether an optical disc was a one-sided disc or a two-sided disc."  Slip Op. at 27.  Given this construction, he would have affirmed the district court's grant of summary judgment of non-infringement. 

Indirect Infringement: The district court granted summary judgment of no indirect infringement of a second patent, No. 5,892,751, based on the conclusion that recording a DVD without finalizing it (the step necessary to allow the DVD to be played on drives other than it was recorded) was a substantial noninfringing use.  On appeal, the Federal Circuit affirmed in the context of contributory infringement but reversed for inducement of infringement.  Here, Toshiba failed to present any evidence that the recording and playing of unfinalized DVDs – which does not infringe the '751 patent – is "unusual, far-etched, illusory, impractical, occasional, aberrant, or experimental." Slip Op. at 8 (quoting Vita-Mix, 581 F.3d 1317, 1327 (Fed. Cir. 2009).  Furthermore, merely recommending an infringing use (finalizing the DVD) is not evidence that a non-infringing use is not a substantial use.  The substantial noninfringing use thus supported the grant of summary judgment of no contributory infringement.   However, the district court erred in holding that the existence of a such a use precludes a finding of inducement of infringement.  Nor could summary judgment of no inducement be affirmed on the ground that the patentee did not provide evidence of specific acts of infringement: circumstantial evidence can suffice.  Here, the circumstantial evidence was stronger than the "capable of infringing" evidence involved in Fujitsu v. Netgear, 620 F.3d 1321 (Fed. Cir. 2010) and ACCO Brands v. ABA Locks, 501 F.3d 1307 (Fed. Cir. 2007).  

Pleading Requirements for Direct Infringement; Inducing Infringement; and Contributory Infringement

Patent

In re Bill of Lading, No. 2010-1493 (Fed. Cir. 2012)

by Dennis Crouch

In a split decision, the Federal Circuit has partially reversed a lower court’s dismissal for failure to state a claim. Writing for the majority, Judge O’Malley made an important doctrinal distinction between when an offer to sell constitutes direct infringement as compared with indirect infringement.  The decision also highlights the tension between recent Supreme Court pleadings cases (Iqbal & Twombly) and the bare-bones form pleadings (Form 18) found in the Federal Rules.  Here, the court held a complaint following the Form 18 necessarily satisfies the notice pleading requirements but that Form 18 does not apply to allegations of indirect infringement.  The result of this case will likely be to further raise the pleading requirements for indirect infringement cases.  Judge Newman dissented — arguing that a Form 18 complaint should normally be deemed insufficient to provide sufficient notice to alleged infringers. 

+ + + + +

R+L Carriers is both the plaintiff and DJ defendant in a merged multi-party suit involving a host of alleged infringers. The lawsuit centers on R+L’s U.S. Patent No. 6,401,078.  The patent is directed to a system for creating bill-of-lading for individual packages.  Basically, the invention directs folks to scan documentation data that is on a package on-board a transporting vehicle; sending that scanned “image” to a remote processing center; and then preparing a loading manifest that directs folks what to do with the package next (such as load it on another vehicle).

Failure to State a Claim: The district court dismissed the lawsuit for failure to state a claim under Fed. R. Civ. Pro. R. 12(b)(6).  Patent cases are begun with the filing of a complaint in federal court. Federal Courts follow a “notice pleading” standard that traditionally only requires a limited amount of information in the complaint itself.  However, in a pair of recent cases, the Supreme Court raised the standard to require that plaintiffs recite sufficient facts in the complaint to make the case plausible. Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009).  The “plausible” standard requires more than showing that liability is merely possible or conceivable.  However, a “plausible” is not necessarily “probable.”  Thus, Twombly and Iqbal raise the potential that the pleadings will better filter meritless cases. However, many losing cases will still survive motions on the pleadings.

Form 18 Complaint: Despite this seeming increased standard, the rules of civil procedure include a loophole through a standard patent complaint known as Form 18. Form 18 is a threadbare complaint and contains only five sentences that make-up the body of the complaint.

1. This action arises under a federal statute, <_____>.

2. On <Date>, United States Letters Patent No. <__________________> were issued to the plaintiff for an invention in an <Electric Motor>.  The plaintiff owned the patent throughout the period of the defendant's infringing acts and still owns the patent.
 
3. The defendant has infringed and is still infringing the Letters Patent by making, selling, and using <Electric Motors> that embody the patented invention, and the defendant will continue to do so unless enjoined by this court.

4. [If Applicable] The plaintiff has complied with the statutory requirement of placing a notice of the Letters Patent on all electric motors it manufactures and sells and has given the defendant written notice of the infringement.

 Therefore, the plaintiff demands: (a) a preliminary and final injunction against the continuing  infringement; (b) an accounting for damages; and (c) interest and costs.

In Twombly, the Supreme Court recognized that there may be some conflict between the form complaints and the higher standards suggested by the Court. In those situations, the Court has been clear that the forms control. Thus, the Federal Circuit here held that pleadings fitting within Form 18 cannot be held insufficient to state a claim for patent infringement.  In particular, the court noted that a plaintiff need not “plead facts establishing that each element of an asserted claim is met” or “even identify which claims it asserts are being infringed.”

Indirect Infringement Not Covered by Form 18*: When examining Form 18, the court made an important distinction between complaints for direct infringement and indirect infringement.  Form 18 is focused on the actions of “making, selling, and using” the patented invention. These are forms of direct infringement. The Federal Circuit here held that the Form 18 only applies to allegations of direct infringement and not indirect infringement. And thus, indirect infringement must be pled in a way that meets the Twombly standard. One exception here is that the court noted that pleading indirect infringement does not require identifying specific customers who perform the underlying direct infringement as long as the facts pled allow an inference of underlying direct infringement.  Note – the court did not specifically decide whether Form 18 is sufficient when the direct infringement is in some form other than making, selling, or using (such as offering for sale).

Contributory Infringement: Section 271(c) of the Patent Act creates contributory infringement liability for anyone who sells or offers to sell a component for use in practicing a patented process and that component is material to practicing the invention, has no substantial non-infringing uses, and is known by the party “to be especially made or especially adapted for use in an infringement of such patent.” 35 U.S.C. § 271(c).  Here, R+L’s complaints failed to specifically allege that the accused components (scanning equipment) lacked substantial non-infringing uses.  On appeal, the Federal Circuit held that the complaint must include that allegation.  Thus, these claims were dismissed.

Inducing Infringement: Section 271(b) of the Patent Act creates liability for inducing infringement and includes a mens rea requirement that the alleged inducer have “knowledge that the induced acts constitute patent infringement.”  Here, the R+L did plead those specific elements, but the district court dismissed the claim after finding the required inferences of knowledge to be “implausible and unreasonable.” On appeal, the Federal Circuit reversed that finding – holding that a plaintiff need not prove its case in the complaint and that at the pleading stage all reasonable inferences must be determined in favor of the non-moving party.”

Before turning to the individual amended complaints and the specific allegations therein, we note a flaw that pervades the district court’s assessment of R+L’s allegations of induced infringement—its failure to draw all reasonable inferences in favor of the non-moving party.  Twombly did not alter this basic premise. Nothing in Twombly or its progeny allows a court to choose among competing inferences as long as there are sufficient facts alleged to render the non-movant’s asserted inferences plausible.

As an example, the complaint identified advertising from one of the defendants that suggested an infringing use and alleged that the advertisement was distributed after receiving a cease and decisit letter from the patentee. The Federal Circuit found that (and similar allegations against other defendants) to be sufficient under Twombly. 

+ + + + +

The implication from this case is that Form 18 should be either (1) eliminated or (2) re-written.  I suggest elimination.  Patent litigators know how to draft a complaint and it is not very difficult to provide a sufficient level of detail and factual allegation in a complaint or counterclaim.  For cases involving patents with excessive claims (25+) I would suggest that simply identifying the patent does not provide sufficient notice. Rather, the complaint should also identify the claims alleged to be infringed.

Survey Response: Does the Amendment Violate the Written Description Requirement?

Patent, ,

by Dennis Crouch

In an earlier post, I mentioned recently issued U.S. Patent No. 8,196,213.  During prosecution, the examiner rejected the pending claims as improperly claiming unpatentable subject matter under 35 U.S.C. 101.   In particular, the PTO submitted that the claimed “computer readable storage medium” could encompass transitory signals, which are themselves unpatentable.  In response, the applicant (Microsoft) amended the claims by adding an express limitation excluding “signals” from the claim scope.  The amended claim begins: “1. A computer readable storage medium excluding signals . . . ” This change satisfied the PTO and the patent quickly issued.   The original patent application document did not discuss signals or directly define computer readable media other than having the functional qualities of being able to “store data that is accessible by a computer.” However, the application did list several examples of computer readable media, including “magnetic cassettes, flash memory cards, digital video disks, Bernoulli cartridges, random access memories (RAMs), read only memories (ROMs) and the like.”

In a one-question survey, I asked Patently-O readers “does this patent claim violate the written description requirement?”  As discussed below, most readers (~75%) agreed that amendment did not invalidate the claim.

Of the 850 responses, almost half (46%) suggested that the claim is valid because the amendment does not go beyond what was originally described in the specification.  In its 2012 memo to examiners, the USPTO argued as much:

A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. 101 by adding the limitation “non-transitory” to the claim. . . . Such an amendment would typically not raise the issue of new matter, even when the specification is silent because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se. The limited situations in which such an amendment could raise issues of new matter occur, for example, when the specification does not support a non-transitory embodiment because a signal per se is the only viable embodiment such that the amended claim is impermissibly broadened beyond the supporting disclosure.

See 1351 Off. Gaz. Pat. Office 212 (Feb 23, 2012).  I have some amount of difficulty understanding the explanation given by the PTO — that no new matter problem is created by the amendment “because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se.” While the USPTO’s interpretation of the law is important during the prosecution process, no deference is given to this type of analysis when a court later considers a patent’s validity.

Another 22% also suggested that the claim is valid because “negative limitations such as this need not be disclosed in the original application.”  And 4% argued that the limitation should be ignored because it is found in the claim preamble.

Only one option in the survey led directly to an invalidity conclusion. 26% of responses suggested that the claim limitation excluding signals from the scope was improper because that limitation was not disclosed in the original application and that the claim is therefore invalid under the written description requirement. 

In my mind, this entire discussion is ridiculous.  The invention in this case (as in several hundred thousand other cases) is a bit of software. Yet, because of these odd rules setup by the U.S. Supreme Court (and their interpretation by the PTO) applicants feel they cannot be straightforward enough to simply obtain a patent on the software. 

*****

In the above discussion, I jump quickly between “new matter” and “written description” doctrines. During patent prosecution, the two doctrines are relatively inseparable. The PTO tends to issue new matter rejections under 35 U.S.C. 132.  Once a patent issues, the facts that would have created a new matter rejection at the PTO lead courts to invalidate claims for failing the written description requirement of 35 U.S.C. 112.

Patently-O Bits & Bytes by Lawrence Higgins

Patent, ,

2012 Jefferson Medal recipient

  • The New Jersey Intellectual Property Law Association (NJIPLA) will award the 2012 Jefferson Medal to the Honorable Garrett E. Brown, Jr. (Ret.), Chief Judge, United States District Judge for the District of New Jersey. Following a 60 year tradition, the NJIPLA presents the Jefferson Medal annually to someone who has made exceptional contributions to the field of intellectual property law. Former Medalists include judges, members of Congress, Patent and Trademark Office officials and leaders of the intellectual property bar. Chief Judge Brown will be presented with the Jefferson Medal on June 8, 2012 at the annual Jefferson Medal Dinner at The Hilton at Short Hills, Short Hills, NJ.

    Chief Judge Brown recently joined the JAMS panel after a distinguished judicial and legal career. He served twenty-six years as United States District Judge for the District of New Jersey, the last six as Chief Judge, where he led the court-wide effort to provide prompt, efficient justice to civil litigants, and to implement new local patent rules. Prior to appointment to the federal judiciary, he served two years as Chief Counsel to the U.S. Maritime Administration. While in private practice, he concentrated on federal commercial litigation, including antitrust, employment, construction, environmental, banking, intellectual property, and securities matters. [Link]

Will Singapore Become a Patent Hotspot?

  • Singapore wants foreign IP attorneys and professionals to relocate there. A Patents Bill was introduced to the parliament, which will allow foreign patent professionals to practice in Singapore without going through the long process of passing exams and doing an internship with a local law firm, which is currently required. However, foreign attorneys will only be allowed to engage in work from other countries. The intention behind the proposed changes is that highly skilled IP professionals from across Asia and beyond will relocate to Singapore, where they will be ideally located to handle patent work for the whole Asia region. [Link] Patent Act

Patent Jobs:

  • Faegre Baker Daniels is seeking a patent associate with 2-6 years of experience and a degree in EE, ME, or ChemE to work at their Minneapolis office. [Link]
  • Klarquist Sparkman is looking for a patent attorney/agent with an advanced degree in organic chemistry and 3+ years of experience to work at their Portland office. [Link]
  • Klarquist Sparkman is searching for a patent attorney with 1-4 years of experience and an EE, CS, or physics degree to work at their Portland office. [Link]
  • Bacon & Thomas is seeking a patent attorney with 1-3 years of experience and a background in ME, EE, or similar to work at their Alexandria, VA office. [Link]
  • Klein, O'Neill & Singh is looking for a patent attorney/agent with 2-5 years of experience and a degree in EE, CS, or physics to work at their Irvine, CA office. [Link]
  • Buchanan Ingersoll & Rooney is searching for a trademark associate with 2-4 years of experience to work at their Alexandria, VA office. [Link]
  • TransTech Pharma is seeking an IP Counsel with 5+ years of experience and a science degree to work at their High Point, NC location. [Link]
  • Baker & Hostetler is looking for patent attorneys with 2+ years of experience with a degree in ME, EE, or materials to work at their Cincinnati office. [Link]
  • Solazyme is searching for a patent agent with 3-5 years of experience and a degree in bio sciences to work at their San Francisco location. [Link]
  • Trop, Pruner & Hu is seeking associates with an EE or CS backgrounds and a minimum of 2 years of experience to work at their Houston or Austin office. [Link]
  • A law firm in Cupertino has multiple openings for patent attorneys/agents with an Electrical or mechanical background. [Link]
  • NSIP LAW is looking for associates with a minimum of 4 years of experience in patent prosecution and an EE, CE, or CS degree to work at their Washington, DC office. [Link]
  • Myers Wolin is seeking a partner level patent or trademark attorney or small practice group with portables to join their firm located in Morristown, NJ. [Link]
  • Kilpatrick Townsend is searching for a student associate or patent agent with a degree in EE, CS, or physics to work at their Washington, DC office. [Link]
  • Los Alamos National Lab is looking for an experienced patent attorney with 8 years of experience and a technical background to work at their Los Alamos, New Mexico location. [Link]
  • Nagoya International Patent Firm is seeking a US patent attorney with 2-5 years of experience to work in Japan. [Link]
  • Banner & Witcoff is searching for lateral associates with EE or CS backgrounds to work at either their Washington, DC or Chicago office. [Link]
  • The Webb Law Firm is looking for a senior litigation attorney with a minimum of 7 years of experience to work at their Pittsburgh location. [Link]
  • The Webb Law Firm is seeking a patent litigation associate with a minimum of 3 years of experience to work at their Pittsburgh location. [Link]
  • The Webb Law Firm is searching for associates with a degree in CS, CE, or EE and a minimum of 3 years of experience to work at their Pittsburgh location. [Link]
  • Perkins Coie is looking for a patent associate with a minimum of 3 years of experience and a degree in EE, physics, or CS to work at their Seattle office. [Link]
  • Fiala & Weaver is seeking patent attorneys/agents with 1+ years of experience and a degree in EE, CS, or physics. [Link]
  • FLSmidth is searching for a patent attorney with at least 5 years of experience to work in Salt Lake City. [Link]
  • Hamilton, Brook, Smith & Reynolds is looking for electrical associates with 3-5 years of patent pro or IP litigation experience to work at their Concord, Massachusetts office. [Link]
  • Sandia National Labs is seeking a patent attorney with 4-8 years of experience and a degree in physics, EE, ChemE or relevant field to work at their Albuquerque location. [Link]
  • Solazyme is searching for an IP paralegal with 2-5 years of experience to work at their San Francisco location. [Link]
  • Senniger Powers is looking for an associate attorney with a minimum of 2 years of experience and a degree in EE, CE, or CS to work at their St. Louis office. [Link]
  • Harness, Dickey & Pierce is seeking an IP litigation associate with 2-4 years of experience to work at their St. Louis location. [Link]
  • Hoxie & Associates is searching for an experienced patent prosecution paralegal to work at their Millburn, NJ office. [Link]
  • Faegre Baker Daniels is looking for a Biotech/Biochem/Chemical patent agent with at least 2 years of experience and a Ph.D. to work at their Denver office. [Link]
  • Schwegman, Lundberg & Woessner is seeking attorneys with 1+ years of experience and a degree in software/Electrical engineering, organic chemistry (Ph.D.), chemical/polymer engineering, and ME. [Link]
  • Telesign is seeking an IP analyst with at least a bachelor's degree to work at their Marina Del Rey, CA location. [Link]
  • The Michaud-Kinney Group is seeking 2 IP attorneys with at least 3 years of experience: 1 with a background in chemistry or biology and the other with a background in mechanical or electrical technologies. [Link]
  • AdvantEdge Law Group is looking for patent attorneys/agents with a degree in EE, CE, or CS and 2-5 years of experience to work at their South Jordan, Utah location. [Link]
  • Schwabe, Williamson & Wyatt is searching for a patent associate with a background in CS and/ or EE and 4 years of experience to work in either their Seattle or Portland office. [Link]
  • NXP is seeking a Sr. patent attorney, IP and licensing with 10-15+ years of experience to work at their San Jose location. [Link]
  • Steptoe & Johnson is searching for IP associates with a minimum of 2 years of experience in patent litigation and a background in EE to work at in their DC office. [Link]
  • Harrity & Harrity is looking for patent attorneys/agents with a minimum of 2 years of experience and a background in EE, CS, or physics to work in their Fairfax, VA office. [Link]
  • Turner, Padget, Graham, and Laney is seeking a patent attorney 3-5 years of experience in drafting and litigating patents to work in their Greenville, SC office. [Link]
  • Weaver Austin Villeneuve & Sampson is searching for a patent attorney/agent with a EE and/or CS background and 3-5 years of experience to work in their Oakland office. [Link]

Upcoming Events:

  • The Los Angeles Intellectual Property Law Association invites you to join us for the 2012 LAIPLA Spring Seminar at the beautiful Lodge at Torrey Pines in La Jolla, California, on June 8-10, 2012. The Spring Seminar features nine hours of panel discussions and presentations on the latest developments in intellectual property law, provides excellent networking opportunities at the cocktail receptions and dinners, and allows sufficient time for relaxation and enjoyable outdoor activities, including a golf tournament at the Torrey Pines Golf Course, home of the 2008 U.S. Open. Speakers and panelists include federal judges, practitioners (including in-house attorneys), and academics. [Link]
  • The Louisville Bar Association, IP Section, is hosting a half-day CLE program covering various topics in patent law, including patent-eligible subject matter in light of Mayo, patent claim interpretation, joint and distributed infringement, and inequitable conduct. The CLE will be held on June 12 from 9 AM until 12 PM at the LBA office in downtown Louisville, Kentucky. Speakers include Donald S. Chisum, author of Chisum on Patents, and Janice M. Mueller, author of Patent Law, Third Edition. [Link]
  • A free webinar on Improving Decision-Making with Patent Claims Analytics hosted by IPVision will take place June 12, 2012 at 1 pm EST/10 am PST. Those who attend will receive a free claims analysis. Sign up here: [Link]
  • The C5's 11th Annual International Conference on Maximising Pharma Patent Lifecycles conference will be held June 20-21 in London. Patent lifecycle management is becoming more crucial for pharmaceutical companies with the cost of research and drugs continually rising and companies constantly trying to obtain the maximum financial benefit from existing patent terms. In addition to protecting existing IP rights and seeking methods to extend current patent lifecycles, pharmaceutical companies are faced with the challenge of inventing new drugs and diversifying portfolios to replace sales on older and generic drugs. [Link]
  • AIPLA's 4th Annual Trademark Bootcamp will be held in Alexandria, VA on June 22. Learn the trademark basics from top trademark practitioners. This day-long course provides a complete overview of the trademark prosecution process from start to finish, with sessions including: pre-filing considerations, the application process, the examination process, and many more. [Link]
  • The ACI 3rd annual Hatch-Waxman Boot Camp will be held June 25-26 in San Diego. Topics to be covered include: the organization, jurisdiction of the FDA and the PTO and their interplay in the patenting of drugs and biologics, how the approval process for drugs and biologics is connected to the patenting of these products, how the Hatch-Waxman Act established the paradigm for market entry of generic small molecule drugs – and how biosimilar and many others. [Link]
  • IP Dispute Resolution 2012 will take place June 28-29 in London. Hear experiences from Kraft Foods, Nokia, Ericsson, Proctor & Gamble, RIM, Google, Unilever…Discuss current litigation issues, procedures & remedies in all relevant jurisdictions. Guest speakers include: Mialeeka Williams, Ignacio de Castro, Michael Bishop, Richard Vary, Kevin Cranman, and many others. [Link] (PatentlyO readers receive a 10% discount)
  • The AUTM annual meeting will take place July 23-25 in Oklahoma City. There will be many intriguing sessions and lectures to attend. Guest speakers include: Dennis Crouch, Kevin Noonan, Todd Sherer, and many more. [Link]
  • ACI's Freedom to Operate conference is scheduled for July 30-31, 2012 in Philadelphia, PA. Freedom to operate searching and analysis, always a critical component of any patent counsel's profession, is undergoing its biggest shake-up in a generation. Expansion of the obviousness standard, the America Invents Act provisions now requiring a truly global search, and other developments have left patent attorneys and business development professionals perplexed as they try to protect valuable IP in an increasingly competitive global environment. [Link] Register for with PO 200 for a discount.
  • Earn Advanced Patent Law CLE in Spectacular Seattle This Summer: The Chisum Patent Academy is now accepting registrations for its 4th annual summer seminar in Seattle, July 30 – August 1, 2012. Their uniquely insightful, interactive seminars are limited to 10 participants. All sessions are taught by Donald Chisum and Janice Mueller. For further details on seminar coverage and registration information, see http://www.chisumpatentacademy.comor e-mail mailto:info@chisum.com
  • IP Law Summer School will be held August 13-17 in Cambridge, UK. The only residential conference for Intellectual Property lawyers who want to get ahead… an unrivalled resource for the consolidation of, or initiation into all of the central concepts in IP, presented in the context of the latest developments in the industry. [Link] (PatentlyO readers receive a 10% discount)

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

Patent, ,

2012 Jefferson Medal recipient

  • The New Jersey Intellectual Property Law Association (NJIPLA) will award the 2012 Jefferson Medal to the Honorable Garrett E. Brown, Jr. (Ret.), Chief Judge, United States District Judge for the District of New Jersey. Following a 60 year tradition, the NJIPLA presents the Jefferson Medal annually to someone who has made exceptional contributions to the field of intellectual property law. Former Medalists include judges, members of Congress, Patent and Trademark Office officials and leaders of the intellectual property bar. Chief Judge Brown will be presented with the Jefferson Medal on June 8, 2012 at the annual Jefferson Medal Dinner at The Hilton at Short Hills, Short Hills, NJ.

    Chief Judge Brown recently joined the JAMS panel after a distinguished judicial and legal career. He served twenty-six years as United States District Judge for the District of New Jersey, the last six as Chief Judge, where he led the court-wide effort to provide prompt, efficient justice to civil litigants, and to implement new local patent rules. Prior to appointment to the federal judiciary, he served two years as Chief Counsel to the U.S. Maritime Administration. While in private practice, he concentrated on federal commercial litigation, including antitrust, employment, construction, environmental, banking, intellectual property, and securities matters. [Link]

Will Singapore Become a Patent Hotspot?

  • Singapore wants foreign IP attorneys and professionals to relocate there. A Patents Bill was introduced to the parliament, which will allow foreign patent professionals to practice in Singapore without going through the long process of passing exams and doing an internship with a local law firm, which is currently required. However, foreign attorneys will only be allowed to engage in work from other countries. The intention behind the proposed changes is that highly skilled IP professionals from across Asia and beyond will relocate to Singapore, where they will be ideally located to handle patent work for the whole Asia region. [Link] Patent Act

Patent Jobs:

  • Faegre Baker Daniels is seeking a patent associate with 2-6 years of experience and a degree in EE, ME, or ChemE to work at their Minneapolis office. [Link]
  • Klarquist Sparkman is looking for a patent attorney/agent with an advanced degree in organic chemistry and 3+ years of experience to work at their Portland office. [Link]
  • Klarquist Sparkman is searching for a patent attorney with 1-4 years of experience and an EE, CS, or physics degree to work at their Portland office. [Link]
  • Bacon & Thomas is seeking a patent attorney with 1-3 years of experience and a background in ME, EE, or similar to work at their Alexandria, VA office. [Link]
  • Klein, O'Neill & Singh is looking for a patent attorney/agent with 2-5 years of experience and a degree in EE, CS, or physics to work at their Irvine, CA office. [Link]
  • Buchanan Ingersoll & Rooney is searching for a trademark associate with 2-4 years of experience to work at their Alexandria, VA office. [Link]
  • TransTech Pharma is seeking an IP Counsel with 5+ years of experience and a science degree to work at their High Point, NC location. [Link]
  • Baker & Hostetler is looking for patent attorneys with 2+ years of experience with a degree in ME, EE, or materials to work at their Cincinnati office. [Link]
  • Solazyme is searching for a patent agent with 3-5 years of experience and a degree in bio sciences to work at their San Francisco location. [Link]
  • Trop, Pruner & Hu is seeking associates with an EE or CS backgrounds and a minimum of 2 years of experience to work at their Houston or Austin office. [Link]
  • A law firm in Cupertino has multiple openings for patent attorneys/agents with an Electrical or mechanical background. [Link]
  • NSIP LAW is looking for associates with a minimum of 4 years of experience in patent prosecution and an EE, CE, or CS degree to work at their Washington, DC office. [Link]
  • Myers Wolin is seeking a partner level patent or trademark attorney or small practice group with portables to join their firm located in Morristown, NJ. [Link]
  • Kilpatrick Townsend is searching for a student associate or patent agent with a degree in EE, CS, or physics to work at their Washington, DC office. [Link]
  • Los Alamos National Lab is looking for an experienced patent attorney with 8 years of experience and a technical background to work at their Los Alamos, New Mexico location. [Link]
  • Nagoya International Patent Firm is seeking a US patent attorney with 2-5 years of experience to work in Japan. [Link]
  • Banner & Witcoff is searching for lateral associates with EE or CS backgrounds to work at either their Washington, DC or Chicago office. [Link]
  • The Webb Law Firm is looking for a senior litigation attorney with a minimum of 7 years of experience to work at their Pittsburgh location. [Link]
  • The Webb Law Firm is seeking a patent litigation associate with a minimum of 3 years of experience to work at their Pittsburgh location. [Link]
  • The Webb Law Firm is searching for associates with a degree in CS, CE, or EE and a minimum of 3 years of experience to work at their Pittsburgh location. [Link]
  • Perkins Coie is looking for a patent associate with a minimum of 3 years of experience and a degree in EE, physics, or CS to work at their Seattle office. [Link]
  • Fiala & Weaver is seeking patent attorneys/agents with 1+ years of experience and a degree in EE, CS, or physics. [Link]
  • FLSmidth is searching for a patent attorney with at least 5 years of experience to work in Salt Lake City. [Link]
  • Hamilton, Brook, Smith & Reynolds is looking for electrical associates with 3-5 years of patent pro or IP litigation experience to work at their Concord, Massachusetts office. [Link]
  • Sandia National Labs is seeking a patent attorney with 4-8 years of experience and a degree in physics, EE, ChemE or relevant field to work at their Albuquerque location. [Link]
  • Solazyme is searching for an IP paralegal with 2-5 years of experience to work at their San Francisco location. [Link]
  • Senniger Powers is looking for an associate attorney with a minimum of 2 years of experience and a degree in EE, CE, or CS to work at their St. Louis office. [Link]
  • Harness, Dickey & Pierce is seeking an IP litigation associate with 2-4 years of experience to work at their St. Louis location. [Link]
  • Hoxie & Associates is searching for an experienced patent prosecution paralegal to work at their Millburn, NJ office. [Link]
  • Faegre Baker Daniels is looking for a Biotech/Biochem/Chemical patent agent with at least 2 years of experience and a Ph.D. to work at their Denver office. [Link]
  • Schwegman, Lundberg & Woessner is seeking attorneys with 1+ years of experience and a degree in software/Electrical engineering, organic chemistry (Ph.D.), chemical/polymer engineering, and ME. [Link]
  • Telesign is seeking an IP analyst with at least a bachelor's degree to work at their Marina Del Rey, CA location. [Link]
  • The Michaud-Kinney Group is seeking 2 IP attorneys with at least 3 years of experience: 1 with a background in chemistry or biology and the other with a background in mechanical or electrical technologies. [Link]
  • AdvantEdge Law Group is looking for patent attorneys/agents with a degree in EE, CE, or CS and 2-5 years of experience to work at their South Jordan, Utah location. [Link]
  • Schwabe, Williamson & Wyatt is searching for a patent associate with a background in CS and/ or EE and 4 years of experience to work in either their Seattle or Portland office. [Link]
  • NXP is seeking a Sr. patent attorney, IP and licensing with 10-15+ years of experience to work at their San Jose location. [Link]
  • Steptoe & Johnson is searching for IP associates with a minimum of 2 years of experience in patent litigation and a background in EE to work at in their DC office. [Link]
  • Harrity & Harrity is looking for patent attorneys/agents with a minimum of 2 years of experience and a background in EE, CS, or physics to work in their Fairfax, VA office. [Link]
  • Turner, Padget, Graham, and Laney is seeking a patent attorney 3-5 years of experience in drafting and litigating patents to work in their Greenville, SC office. [Link]
  • Weaver Austin Villeneuve & Sampson is searching for a patent attorney/agent with a EE and/or CS background and 3-5 years of experience to work in their Oakland office. [Link]

Upcoming Events:

  • The Los Angeles Intellectual Property Law Association invites you to join us for the 2012 LAIPLA Spring Seminar at the beautiful Lodge at Torrey Pines in La Jolla, California, on June 8-10, 2012. The Spring Seminar features nine hours of panel discussions and presentations on the latest developments in intellectual property law, provides excellent networking opportunities at the cocktail receptions and dinners, and allows sufficient time for relaxation and enjoyable outdoor activities, including a golf tournament at the Torrey Pines Golf Course, home of the 2008 U.S. Open. Speakers and panelists include federal judges, practitioners (including in-house attorneys), and academics. [Link]
  • The Louisville Bar Association, IP Section, is hosting a half-day CLE program covering various topics in patent law, including patent-eligible subject matter in light of Mayo, patent claim interpretation, joint and distributed infringement, and inequitable conduct. The CLE will be held on June 12 from 9 AM until 12 PM at the LBA office in downtown Louisville, Kentucky. Speakers include Donald S. Chisum, author of Chisum on Patents, and Janice M. Mueller, author of Patent Law, Third Edition. [Link]
  • A free webinar on Improving Decision-Making with Patent Claims Analytics hosted by IPVision will take place June 12, 2012 at 1 pm EST/10 am PST. Those who attend will receive a free claims analysis. Sign up here: [Link]
  • The C5's 11th Annual International Conference on Maximising Pharma Patent Lifecycles conference will be held June 20-21 in London. Patent lifecycle management is becoming more crucial for pharmaceutical companies with the cost of research and drugs continually rising and companies constantly trying to obtain the maximum financial benefit from existing patent terms. In addition to protecting existing IP rights and seeking methods to extend current patent lifecycles, pharmaceutical companies are faced with the challenge of inventing new drugs and diversifying portfolios to replace sales on older and generic drugs. [Link]
  • AIPLA's 4th Annual Trademark Bootcamp will be held in Alexandria, VA on June 22. Learn the trademark basics from top trademark practitioners. This day-long course provides a complete overview of the trademark prosecution process from start to finish, with sessions including: pre-filing considerations, the application process, the examination process, and many more. [Link]
  • The ACI 3rd annual Hatch-Waxman Boot Camp will be held June 25-26 in San Diego. Topics to be covered include: the organization, jurisdiction of the FDA and the PTO and their interplay in the patenting of drugs and biologics, how the approval process for drugs and biologics is connected to the patenting of these products, how the Hatch-Waxman Act established the paradigm for market entry of generic small molecule drugs – and how biosimilar and many others. [Link]
  • IP Dispute Resolution 2012 will take place June 28-29 in London. Hear experiences from Kraft Foods, Nokia, Ericsson, Proctor & Gamble, RIM, Google, Unilever…Discuss current litigation issues, procedures & remedies in all relevant jurisdictions. Guest speakers include: Mialeeka Williams, Ignacio de Castro, Michael Bishop, Richard Vary, Kevin Cranman, and many others. [Link] (PatentlyO readers receive a 10% discount)
  • The AUTM annual meeting will take place July 23-25 in Oklahoma City. There will be many intriguing sessions and lectures to attend. Guest speakers include: Dennis Crouch, Kevin Noonan, Todd Sherer, and many more. [Link]
  • ACI's Freedom to Operate conference is scheduled for July 30-31, 2012 in Philadelphia, PA. Freedom to operate searching and analysis, always a critical component of any patent counsel's profession, is undergoing its biggest shake-up in a generation. Expansion of the obviousness standard, the America Invents Act provisions now requiring a truly global search, and other developments have left patent attorneys and business development professionals perplexed as they try to protect valuable IP in an increasingly competitive global environment. [Link] Register for with PO 200 for a discount.
  • Earn Advanced Patent Law CLE in Spectacular Seattle This Summer: The Chisum Patent Academy is now accepting registrations for its 4th annual summer seminar in Seattle, July 30 – August 1, 2012. Their uniquely insightful, interactive seminars are limited to 10 participants. All sessions are taught by Donald Chisum and Janice Mueller. For further details on seminar coverage and registration information, see http://www.chisumpatentacademy.comor e-mail mailto:info@chisum.com
  • IP Law Summer School will be held August 13-17 in Cambridge, UK. The only residential conference for Intellectual Property lawyers who want to get ahead… an unrivalled resource for the consolidation of, or initiation into all of the central concepts in IP, presented in the context of the latest developments in the industry. [Link] (PatentlyO readers receive a 10% discount)

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Avoiding Subject Matter Problems but Creating Written Description Problems

Patent,

Since Bilski, the USPTO has been understandably struggling with its patentable subject matter procedures. This is especially true in the area of computer software.

U.S. Patent No. 8,196,213 issued this week to Microsoft and is directed to a method of verifying un-trusted code. The original application included claims directed toward “a computer readable storage medium” loaded with varous instructions arranged in a novel manner. In July 2011, however, the examiner and the art unit’s Supervising Patent Examiner (SPE) mailed a final rejection of the claim based upon their conclusion that the claim impermissible encompassed unpatentable subject matter under 35 U.S.C. 101.  The examiners reasoned that the storage medium classification was broad enough to include signals and that signals are unpatentable under Section 101. See 1351 Off. Gaz. Pat. Office 212 (Feb 23, 2012).

In response, Microsoft amended the claims – adding an express limitation that excludes signals.  The amended claim begins: “1. A computer readable storage medium excluding signals . . . ” This change satisfied the PTO and the patent quickly issued.

The original patent document never discusses signals and only defines computer readable media by reference to various elements “which can store data that is accessible by a computer, such as magnetic cassettes, flash memory cards, digital video disks, Bernoulli cartridges, random access memories (RAMs), read only memories (ROMs) and the like may also be used in the exemplary operating environment.” 

The Question: Should the PTO have rejected the amendment for failing the written description requirement?